Union Pacific Sues Athearn & Lionel

Well I guess it had to come eventually, and they going after two of
the big names too. Here's a link to UP's press release:

http://www.uprr.com/newsinfo/modelrail.shtml
Here's the suing part:
"Union Pacific defends trademarks
Union Pacific Railroad Company has filed a complaint in U.S. District
Court for the District of Nebraska naming as defendants Lionel, L.L.C.
and Athearn, Inc. The defendants are model railroad manufacturers who
have refused to enter into licensing agreements for their commercial
use of Union Pacific trademarks. The complaint alleges claims of
infringement of federally registered trademarks, trademark dilution
under § 43(c) of the Lanham Act, Unfair Competition under § 43(a) of
the Lanham Act, common law trademark infringement, unfair competition,
and violation of the Nebraska Uniform Deceptive Trade Practices Act.
Union Pacific believes it is imperative that it defends its trademarks
against unauthorized use by Lionel and Athearn. Both companies
repeatedly have rejected Union Pacific's lawful licensing requests.
Not only have Lionel and Athearn failed to license use of Union
Pacific's historic trademarks, they have violated trademark protection
laws by producing new models featuring Union Pacific's latest
"Building America" branding and advertising campaign.
Union Pacific notes that Lionel has a very active licensing program
that protects its own trademark. It is difficult to understand why
Lionel and Athearn believe they are above the law, while more than 60
other manufacturers, including many model railroad manufacturers, have
licensed their Union Pacific products in accordance with the law."
I like the part about Lionel protecting their trademark - it only
seems to work one way I guess!
Bob Boudreau
Canada

Those of us who believe that UP is wrong in their heavy handed licensing
program should support Athearn and Lionel in the only ways we can: buy their
products; if you know any news reporter types, see if this attempt to impose
a tax on model railroaders can be reported in way embarrassing to UP.
Clearly, we have no way to directly influence UP: they simply don't care and
likely none of us control enough shipping business to matter. In my opinion,
UP is using their size and [compared to Athearn and Lionel] unlimited legal
budget to extort a tax from all of us for trademarks used freely for many
years. The Lionel comparison is a false analogy: Lionel NEVER allowed their
trademarks and symbols to be used by anybody, not nowhere, not no how. UP
allowed their marks, and the fallen flag marks to be used everywhere without
restriction, and even paid for their use when promoting customer (that is,
rail travelers) good will was important to them.
This would be interesting if not so irritating.
Ed
in article snipped-for-privacy@posting.google.com, Arailfan at
snipped-for-privacy@post.com wrote on 6/2/04 10:13 AM:

They aren't trying to "tax" model railroaders. they are simply
trying to protect their trademarks. People whine this is unfair but
would be enraged if someone stole something from them and these
companies trademarks are as much their property as your car is yours..
How would you like it if someone took your car, drove like a maniac,
made a fool of themselves mooning etc., and to all who saw it it
appeared you were the one in the car? That is effectively what
happens when someone uses a company trademark without permission.
Their symbol has value, a value they have worked hard to imbue it
with, so they deserve recompense when others use it for profit.
Why have they just started to enforce licensing? Because
recent goings on in the legal arena have made it a requirement to
"VIGOROUSLY" protect their trademarks and copyrights or they will lose
them. In the past this "vigor" was not so demanded so they let it
slide but with all the problems of piracy, counterfeiting, and
infringement, any company has to be more aggressive or they WILL lose
their trademark. Much of the problem is to be found in the current
insane litigation in the US. Best to blame that than a company for
trying to keep what it legitimately owns. I have to "vigorously"
protect my trademarks and copyrights, so why shouldn't they?
cat

I didn't say that UP couldn't protect the trademark, etc. which they
actually own. There are several pieces to this puzzle.
1. Fallen flags marks: they bought the roads, killed them off, and never
defended the marks before now. MR manufacturers and others have used them
for years. The courts may decide that these have passed into the public
domain.
2. UP's older marks: same as #1.
3. UP's newer marks: they have every right to defend these and I don't think
there is even a question about it. But... They are being heavy handed about
it. The income they will derive from the MR industry is trivial compared to
their other revenues; they might not even cover their accounting costs. What
they should do (in the name of good will) is to let manufacturers apply for
permission to use a set of marks, and then only determine that the applicant
is a legitimate manufacturer and allow those marks on models, decals and
ads: specifically prohibit t-shirts, coffee mugs, et al.
That way, they protect the mark (permission is required), good will is
generated, and the costs are small to UP and the manufacturers.
But we'll let the courts decide who owns what, what's in the public domain,
and who has to get permission to profit by the marks.
Just my non-legal opinion; the same one I sent to UP investor relations (I'm
a stock holder via a transportation fund).
Ed.
in article snipped-for-privacy@4ax.com, cat at
snipped-for-privacy@consultant.com wrote on 6/2/04 4:11 PM:

in article bZuvc.76432$ snipped-for-privacy@twister.rdc-kc.rr.com, Mark Mathu at
snipped-for-privacy@mathu.com wrote on 6/2/04 6:15 PM:

Maybe it could, but it is more likely that t-shirt makers would do some
sarcastic thing about UP than for Athearn or Lionel to do so, if UP were to
scrutinize those uses more than, say, Athearn's, it would be justified.
And maybe the coffee mug industry could claim the same rights as Athearn et
al: they've been freely using the UP and other logos for years without an
enforcement activity on UP's part. If the court rules that any of these
marks are in the public domain, the UP loses big time. But they have chosen
this path, as Athearn and Lionel have chosen theirs. It is not up to the
lawyers and the courts to sort it all out

I'm only proposing that some users of UP marks could be accepted without
much review: Lionel, Athearn, LifeLike, Kato, et al for use on models,
decals, and advertising of those products. Those companies could even be
required to sign a license agreement stipulating allowed and disallowed uses
and giving UP the sole right to demand cessation of uses UP deems to be not
showing UP in a good light. The cost to the users should be the actual cost
of administering the program or free: it costs Up the same to approve a well
known boutique manufacturer as it does to approve Athearn; in any case 5% or
so of sales has nothing to do with UP costs.
Other users of more dubious reputation might be subject to stricter (and
more costly) reviews, and they should pay for it.
To me the issue for UP is to legitimately protect their trademarks, etc..
They are a transportation company, not a media company (yet :-), and trying
to turn logo licensing into a profit center may not be worth the cost to
them. But as I've said in the past, their current logos are their property
and they have every right to control them or charge for them as they see
fit.
I suspect the reason that Athearn and Lionel have not signed the licensing
agreement is that it specifies a payment schedule not only for the current
logos, but for older UP logos and fallen flag logos which have been used
freely for years. For all I know, A & L tried to negotiate inclusion of only
current logos and failed. They may have decided to force the issue to court
and agree to pay for current logos and exclude old ones. Maybe Athearn's or
Lionel's lawyers will tell us what their defense is for using current logos
without license.
Ed
in article KYAvc.78733$ snipped-for-privacy@twister.rdc-kc.rr.com, Mark Mathu at
snipped-for-privacy@mathu.com wrote on 6/3/04 1:04 AM:

in article DsPvc.83505$ snipped-for-privacy@twister.rdc-kc.rr.com, Mark Mathu at
snipped-for-privacy@mathu.com wrote on 6/3/04 5:34 PM:

Nah, I was thinking of creating a line of tee shirts showing a ewe whose
wool was died yellow, grey, and red urinating on a model train with the
logo, "Ewe Pee."
I was OK legally until I realized that UP has even trademarked the use of
those colors. Sigh, there goes another $10 down the drain.

Not entirely.
"Not only have Lionel and Athearn failed to license use of Union
Pacific's historic trademarks"
That appears to include the fallen flags, though it's a little vague.
Mike Tennent
"IronPenguin"

Unfortunately your argument is not germane to the issue in question here. The
two
defendants are not wrongfully using any property of the Union Pacific Corporation
either real or intellectual.
<< THAT >> is precisely the whole issue here.
It is highly unlikely that Athearn and Lionel are going to usurp the Union
Pacific's
business as a common carrier freight hauler. Neither is either company likely to
besmirch the "public image" of the company that brought you the Teapot Dome
affair.
There are ways to protect trademarks, but UP has not availed itself of those
ways,
but has instead sought to bludgeon the hobby industry for the sins of others.
For the
UP to lose this suit against Athearn/Horizon and Lionel is the only just
conclusion.

here.
their
With corporate Trademarks, it is 100 years before it becomes public domain.
I know this because I put out a line of Public Domain movies on DVD. Public
Domain used to occur 28 years after a work was produced, unless the creator
applied for an extension, which put it to 50 yeras. The Sonny Bono act of
the mid-90s extened that to 75 years. Disney is trying to extend it again.
Right now some films are PD even though they were done in the 1960s, while
some have been protected for years.
Corporate Trademarks are valid for 100 years, this is why Disney has
trademarked Mickey Mouse his first toons were made in 1928, and hence are PD
right now. WB did the same thing with Bugs Bunny, Daffy, Porky and all their
"stars", they are now trademarks of WB and protected for another 100 years.
So the only Trademarks that would fit into the PD would be those of
companies that went out of business before 1904 and were not picked up by a
new company.

Nothing to do with Trademarks. That is copyright you are talking about.
See: http://www.forbes.com/2003/01/15/cz_mf_0115copyright.html
Trademarks and copyrights have TOTALLY different laws and rules.
That is why som many people are screwed up about this. They keep saying
things that are technically about copyrights and not about trademarks.
They are different, have different rules, and are done in different
offices of the government.
Charles

I know this Charles, like I said, WB and Disney wanted MORE control over
their creations than copyright allowed, so the established their main
characters as corporate trademarks. It is easier to protect them that way.

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